- Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00166 · APJ Robert L Kinder · IPR · Institution
The Board denied institution for claims 1–10 because Petitioner did not show a reasonable likelihood that the Nadison 610, Johnson, and ISO11783 combination rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’017 patent would have had: a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and have at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Pet. 11. Patent Owner does not dispute this level of skill. See Prelim. Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “[n]o terms need construction for this IPR” but “reserves the right to identify terms for construction as may become necessary in . . . ‘the District Court case’[] and to respond to any constructions that Patent Owner submits.” Pet. 20. Patent Owner “agrees with Petitioner that no terms require construction” and also “reserves the right to identify terms for construction as may become necessary in the parallel district court litigation . . . and to respond to any construction that Petitioner may submit.” Prelim. Resp. 15. On this record, we determine that no claim term requires an express construction for the purpose of determining whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Petitioner that the ISO11783 requires a device to have a NAME field in order for the task controller to identify the device. See Ex. 1013, 12. However, we are not persuaded by Mr. Ault’s testimony or Petitioner’s arguments that the communication protocol must be defined in an implement profile such as the NAME field even if manufacturers use systems beyond those directly supported in the ISO11783. See Pet. 27–48; Ex. 1013, 28, 33; Ex. 1002 ¶¶ 64, 114–125, 162–167; Ex. 1014, 5, 9. The NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why any communication protocol would identify the function or place of an ECU in a network, which is the purpose of the NAME field. See Pet. 37–38 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”). Petitioner has not explained sufficiently otherwise. We further observe that Mr. Ault alludes that ISO11783 provides a standardized, and thus known, communication protocol that supports the use of proprietary communications simultaneous with standardized messages. Id. ¶ 64. Mr. Ault later surmises that “it would have been obvious to a POSITA to store proprietary message formats for manufacturers that use proprietary message format.” Id. ¶ 167. We observe that in paragraphs 63 and 64 of his declaration, Mr. Ault relies on Exhibit 1014, titled “An Electronic Communication Protocol for Agricultural Equipment,” for the proposition that ISO11783 “supports the use of proprietary communications simultaneous with standardized messages” and “[m]anufacturers are free to implement enhanced control and information systems beyond those directly supported in the standard.” Id. ¶ 64 (citing Ex. 1014, 7)7 (alteration in original). We understand this cited disclosure in Exhibit 1014 acknowledges that proprietary communications are beyond those directly supported in the ISO11783 and that enhanced control and information systems are required for proprietary communications. Id. Said another way, these statements are consistent with our understanding that ISO11783 does not, by default, teach proprietary communication protocols defined in the device description fields, e.g., NAME field. Ex. 1014, 7 (“ISO11783 does not provide a complete design that can be implemented without further considerations on agricultural equipment.”). That being the case, we agree with Patent Owner’s position that the ISO11783 does not itself “identify different proprietary formats (i.e., the communication protocol) used by a given implement from a stored collection of implement profiles.” Prelim. Resp. 21. 7 Petitioner cites to page 9, however, we use the stamped page numbers for the exhibit. Even assuming for the moment that proprietary message formats “indicate” communication protocols, Petitioner has still not explained sufficiently why a POSITA would store those proprietary message formats in the NAME field. As noted above, the NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why proprietary message formats would identify the function or place of an ECU in a network. See id.; see also Pet. 37 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”).” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,107,017 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00159 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 would have been obvious over Nadison 610, Nadison 630, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 8
- Expert testimonyPetitioner expert discountedOther
“The testimony from Petitioner’s expert, Mr. Ault, is not persuasive in this regard. See Ex. 1002 ¶¶ 165–170. For example, in paragraph 152 of his declaration, he repeats the same citations of ISO11783 presented in the Petition. Ex. 1002 ¶ 165. Mr. Ault testifies that the POSITA would have understood that ISO11783 standard part 10 directly teaches the POSITA to identify a device description object pool (a “communication protocol” in the language of the ’485 patent) using the NAME field (as WorkingSetMasterNAME) as well as other items such as a “Device Software Version” in table A-1. Ex. 1002 ¶ 165 (emphases added). Initially, we note that a citation to the entirety of ISO11783, Part 10 is hardly helpful. We decline to speculate on the specific disclosure the Petitioner relies upon in these 100 pages. Still, we observe that ISO11783 teaches that the NAME field describes the NAME of Working-set master, but does not describe a communication protocol. See Ex. 1013, 33. Similarly, the Device Software Version is described as “Software version indicating text;” not a communication protocol. Id. In other words, neither field includes a communication protocol.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and [] at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Additional education would compensate for less experience, and vice-versa. Pet. 11. Patent Owner accepts Petitioner’s level of skill at this stage. Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“However, the portions of ISO11783 cited in the Petition do not support Petitioner’s arguments or Mr. Ault’s testimony in this regard. For example, Petitioner argues that ISO11783, Part 10 teaches “objects containing the device description data” for the implements include manufacturing code, device class, and device software version. Even assuming Petitioner is correct, missing from this disclosure is any mention of a “communication protocol” required by claim 1. Pet. 29; see also Ex. 1013, 33 (cited as page 27 in the Petition). As another example, page 28 of ISO11783, Part 10 (cited as page 22 in the Petition) teaches that the task controller stores the device description for transfer back to the FMIS (farm management information system), but does not teach the NAME field or device description includes a communication protocol. Ex. 1013, 33; Pet. 29–30 (citing Ex. 1013, 27). Rather, ISO11783 teaches that “[t]he task controller shall also store the device description for transfer back to the FMIS. For this transfer of the device description data over the ISO 11783 CAN network, a set of objects is defined. The objects containing the device description data are described in Annex A.” Ex. 1013, 28. describes attributes of ISO11783’s DeviceObjects. Table A.1 labeled “DeviceOject definition” lists attribute names in a far-left column with descriptions for each attribute name in a far-right column. Id. at 27. While Annex A provides several definitions for the DeviceObject, Petitioner has not explained persuasively how any of these fields is or includes a “communication protocol.” Indeed, Petitioner has not explained sufficiently how the ISO11783 teaches that a communication protocol is defined as part of the DeviceObject, device descriptions, or NAME field. As shown, Annex A does not discuss or mention a communication protocol for any of these definitions.” slip op. at 15
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,151,485 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00165 · APJ Frances L Ippolito · IPR · Institution
Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–18 would have been obvious over Nadison 610, Johnson, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“including Patent Owner’s preliminary evidence of secondary considerations, which we do not rely upon for this Decision, we find that Petitioner’s arguments are incomplete as discussed in detail above. Thus, we determine that Petitioner has not established a reasonable likelihood of prevailing in its contention that claim 1 would have been obvious over the combination of Nadison 610, Johnson, and ISO11783. F. Dependent Claims 2–18 Dependent claims 2–18 each depend from independent claim 1. Ex. 1001, 26:12–28:61. For the reasons discussed with respect to claim 1, we determine that Petitioner has not established a reasonable likelihood of prevailing in its contention that claims 2–18 would have been obvious over the combination of Nadison 610, Johnson, and ISO11783.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Petitioner that the ISO11783 requires a device to have a NAME field in order for the task controller to identify the device. See Ex. 1013, 12. However, we are not persuaded by Mr. Ault’s testimony or Petitioner’s arguments that the communication protocol must be defined in an implement profile such as the NAME field even if manufacturers use systems beyond those directly supported in the ISO11783. See Pet. 25–46; Ex. 1013, 28, 33; Ex. 1002 ¶¶ 65, 119–127, 159–166; Ex. 1014, 5, 9. The NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why any communication protocol would identify the function or place of an ECU in a network, which is the purpose of the NAME field. See Pet. 35 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”). Petitioner has not explained sufficiently otherwise. We further observe that Petitioner contends “[i]t would have been obvious to a POSITA to store proprietary message formats for manufacturers that use proprietary message formats, which also indicate known communication protocols.” Pet. 35–36. However, in paragraph 65 of his declaration, Mr. Ault relies on Exhibit 1014, titled “An Electronic Communications Protocol for Agricultural Equipment,” for the proposition that ISO11783 “supports the use of proprietary communications simultaneous with standardized messages” and “[m]anufacturers are free to implement enhanced control and information systems beyond those directly supported in the standard.” Ex. 1002 ¶ 65 (citing Ex. 1014, 7)7. We 7 Petitioner cites to page 9, however, we use the stamped page numbers for the exhibit. understand this cited disclosure in Exhibit 1014 acknowledges that proprietary communications are beyond those directly supported in the ISO11783 and that enhanced control and information systems are required for proprietary communications. Id. Said another way, these statements are consistent with our understanding that ISO11783 does not, by default, teach proprietary communication protocols defined in the device description fields, e.g., NAME field. Ex. 1014, 7 (“ISO11783 does not provide a complete design that can be implemented without further considerations on agricultural equipment.”). That being the case, we agree with Patent Owner’s position that the ISO11783 does not itself “identify different proprietary formats (i.e., the communication protocol) used by a given implement from a stored collection of implement profiles.).” Prelim. Resp. 22. Even assuming for the moment that proprietary message formats “indicates” communication protocols, Petitioner has still not explained sufficiently why a POSITA would store those proprietary message formats in the NAME field. Again, the NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10; see also Pet. 36 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”).” slip op. at 22
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We note that none of these statements are presented in the Petition except by bare citation. Pet. 32–37, id. at 34. As stated in the Consolidated Trial Practice Guide6, “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board.” TPG 35– 36 (citing Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) (informative)); see also 37 C.F.R. § 42.6(a)(3) (2022) (“Arguments must not be incorporated by reference from one document into another document.” (emphasis added)). On this basis, we need not consider Mr. Ault’s testimony, in paragraphs 126–127 of his declaration, that is improperly incorporated by reference (without discussion) into the Petition. As such, these arguments have not been made in the Petition as they are not included in the Petition. Moreover, these statements are largely conclusory, lacking any citation to the underlying facts or data upon which the testimony is based. See 37 C.F.R. § 42.65(a) (2022) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins &” slip op. at 20
- Other 314aNot reached
“III. 35 U.S.C. § 314(a) DISCRETION In view of our determination on the merits to deny institution of inter partes review, we need not consider the parties’ arguments regarding exercising our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 24
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,963,825 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00164 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 would have been obvious over Nadison 610, Johnson, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Claim 1 requires that “a plurality of implement profiles on the server system, each of which is associated with a respective known farming implement, the implement profiles each defining a known manufacturer code, a known device class, a known version and a known communication protocol for the respective known farming implement associated therewith.” Ex. 1001, 25:46–52 (emphases added).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. at 28. Table A.1 labeled “DeviceObject definition” lists attribute names in a far-left column with descriptions for each attribute name in a far-right column. Id. at 28. While Annex A provides several definitions for the DeviceObject, Petitioner has not explained persuasively how any of these fields is or includes a “communication protocol.” Indeed, Petitioner has not explained sufficiently how the ISO11783 teaches that a communication protocol is defined as part of the DeviceObject, device descriptions, or NAME field. As shown, Annex A does not discuss or mention a communication protocol for any of these definitions.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The testimony from Petitioner’s expert, Mr. Ault, is not persuasive in this regard. See Ex. 1002 ¶¶ 151–159. For example, in paragraph 152 of his declaration, he repeats the same citations of ISO11783 presented in the Petition. Ex. 1002 ¶ 152. Mr. Ault testifies that the POSITA would have understood that ISO11783 Part 10 directly teaches the POSITA to identify a device description object pool (a “communication protocol” in the language of the ’116 patent) using the NAME field (as WorkingSetMasterNAME) as well as other items such as a “Device Software Version” in table A-1. Ex. 1002 ¶ 152 (emphases added). Initially, we note that a citation to the entirety of ISO11783, Part 10 is hardly helpful. We decline to speculate on the specific disclosure the Petitioner relies upon in these 100 pages. Still, we observe that ISO11783 teaches that the NAME field describes the NAME of Working-set master, but does not describe a communication protocol. See Ex. 1013, 33. Similarly, the Device Software Version is described as “Software version indicating text;” not a communication protocol. Id. In other words, neither field includes a communication protocol.” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’116 patent would have had: a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and have at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Pet. 11. Patent Owner does not dispute this level of skill. See Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,164,116 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00158 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 would have been obvious over Nadison 610, Nadison 630, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Table A.1 labeled “DeviceOject definition” lists attribute names in a far-left column with descriptions for each attribute name in a far-right column. Id. at 27. While Annex A provides several definitions for the DeviceObject, Petitioner has not explained persuasively how any of these fields is or includes a “communication protocol.” Indeed, Petitioner has not explained sufficiently how the ISO11783 teaches that a communication protocol is defined as part of the DeviceObject, device descriptions, or NAME field. As shown, Annex A does not discuss or mention a communication protocol for any of these definitions.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 156 (emphases added). Initially, we note that a citation to the entirety of ISO11783, Part 10 is hardly helpful. We decline to speculate on the specific disclosure the Petitioner relies upon in these 100 pages. Still, we observe that ISO11783 teaches that the NAME field describes the NAME of Working-set master, but does not describe a communication protocol. See Ex. 1013, 33. Similarly, the Device Software Version is described as “Software version indicating text;” not a communication protocol. Id. In other words, neither field includes a communication protocol.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and [] at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Additional education would compensate for less experience, and vice-versa. Pet. 11. Patent Owner accepts Petitioner’s level of skill at this stage. Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,126,937 - Dell Technologies Inc. And Dell Inc. v. 3d Surfaces LLCInstitution deniedPTAB · Apr 19, 2023 · IPR2023-00005 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution of IPR on claims 10–20 because Patent Owner’s stipulation mooted the priority dispute and Petitioner showed no exceptional circumstances for two petitions.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“(“TPG”) advises that “one petition should be sufficient to challenge the claims of a patent in most situations” but also “recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” TPG 59. The TPG also provides that a petitioner filing concurrent petitions challenging claims of the same patent should file a paper (1) ranking the petitions in the order in which the petitioner wishes the Board to consider the petitions’ merits and (2) explaining the differences between the petitions, among other things. TPG 59–60.” slip op. at 3
Discretionary denial - Intel Corporation v. 3d Surfaces, LLCInstitution deniedPTAB · Apr 19, 2023 · IPR2022-01590 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution of IPR challenging claims 10–20 because the owner’s stipulation mooted the priority dispute, and petitioner showed no exceptional circumstances for two petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“(“TPG”) advises that “one petition should be sufficient to challenge the claims of a patent in most situations” but also “recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” TPG 59. The TPG also provides that a petitioner filing concurrent petitions challenging claims of the same patent should file a paper (1) ranking the petitions in the order in which the petitioner wishes the Board to consider the petitions’ merits and (2) explaining the differences between the petitions, among other things. TPG 59–60.” slip op. at 3
Discretionary denial - PTAB · Apr 19, 2023 · IPR2023-00006 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR of claims 1–10 on all grounds presented and granted Dell’s motion to join the Intel IPR, subject to participation conditions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Dell’s Petition is substantially identical to the Intel IPR petition, challenging the same patent and claims, based on the same grounds of unpatentability, and relying on the same evidence (including the same prior art combinations supported by the same witness’s testimony). See Mot. 1, 2–3. Dell seeks institution only of the same claims and ground for which the Board has instituted review in the Intel IPR. Id.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Dell timely filed its Motion for Joinder within one month of the institution of the Intel IPR, as required by 37 C.F.R. § 42.122(b). Dell also states it “will agree to consolidated filings for all substantive papers in the proceeding” and “to incorporate [Dell’s] filings with those of Intel in a consolidated filing, subject to the ordinary rules for one party on page limits.” Mot. 3–4. Dell represents that “Intel and [Dell] will be jointly responsible for the consolidated filings” and Dell “agrees not to be permitted any arguments separate from those advanced by [Dell] and Intel in the consolidated filings.” Id. at 4. Further according to Dell, “Intel and Dell will designate an attorney to conduct the cross examination of any given witness produced by [Patent Owner] and the redirect of any given witness produced by Intel or Dell,” and “Dell will not receive any separate cross-examination or redirect time.” Id. at 6. As discussed in Section II above, the instituted grounds in this proceeding are the same as those instituted in the Intel IPR. In light of that overlap, and the essentially identical timing of the two proceedings, and Dell’s foregoing stipulations limiting its participation to an understudy role, we determine Dell has established persuasively that joinder is appropriate and will have little to no impact on the timing, cost, or complexity of briefing and/or discovery on the instituted grounds. Thus, in consideration of the foregoing, and in the manner set forth in the following Order, Dell’s Motion for Joinder is granted.” slip op. at 5
None - Intel Corporation v. 3d Surfaces, LLCInstitutedPTAB · Apr 19, 2023 · IPR2022-01591 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 10–20 because Petitioner showed a reasonable likelihood that claims 10–20 would have been obvious over Sfarti and Foley.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years work towards a masters or doctorate degree in these proceeding, Patent Owner “applies Petitioner’s definition.” Prelim. Resp. 10. We agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“On this record, we agree with Petitioner that “unit” does not connote any particular structure, and that the terms “tessellation unit,” “transform unit,” “lighting unit,” and “rendering unit” recite function without reciting sufficient structure for performing that function. Therefore, these terms should be construed as means plus function terms. “Construing a means-plus-function claim term is a two-step process. The court must first identify the claimed function. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (en banc) (citation omitted). In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit requires “that the specification disclose an algorithm for performing the claimed function.” Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015). “A description of the function in words may disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011). “The law is clear that patent documents need not include subject matter that is known in the field of the invention and is in the prior art, for patents are written for persons experienced in the field of the invention.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1371 (Fed. Cir. 2001). Claim 10 recites “a transform unit that transforms the graphic objects into transformed objects.” Claim 15 recites a similar limitation. Claim 12 recites “said transform unit transforms the spatial coordinates of said graphic objects.” The specification discloses that the function of “transform[ing] the graphic objects into transformed objects” and “transform[ing] the spatial coordinates of said graphic objects” is performed by a graphics processing unit (GPU) including a dedicated processor programmed to execute the transform step of the disclosed microcode. Ex. 1001, 5:63–6:3; 7:10–15, 7:19–20, 12:49––52; Ex. 1003 ¶¶ 106–107. We construe “transform unit” as a means plus function limitation with the function of transforming graphic objects into transformed objects (claims 10 and 15), or the function of transforming the spatial coordinates of said graphic objects (claim 12), and with the corresponding structure of a GPU including a dedicated processor programmed to execute the transform step of the microcode disclosed in the specification. b) Tessellation unit Claim 10 recites “a tessellation unit for tessellating the transformed objects.” Claims 11 and 15 recite a similar limitation. The specification discloses that the function of “tessellating the transformed objects” is performed by a GPU that includes a dedicated processor coupled between the transform unit and a lighting unit, where the dedicated processor is programmed to execute the tessellating steps of the disclosed microcode. Ex. 1001, 6:4–59, 7:10–15, 7:20–24, 12:49–52; Ex. 1003 ¶¶ 108–109. We construe “tessellation unit” as a means plus function limitation with the function of tessellating the transformed objects and with the corresponding structure of a GPU including a dedicated processor coupled between the programmed to execute the tessellating steps of the disclosed microcode. c) Lighting unit Claim 10 recites a “lighting unit comprising means for lighting triangles resulting from said tessellation unit.” Claim 13 recites “a lighting unit . . . for lighting the tessellated transformed objects.” Claim 15 recites “lighting vertices of triangles resultant from said tessellating using said lighting unit.” The specification discloses that the function of “lighting triangles resulting from said tessellation unit,” “lighting the tessellated transformed objects,” and “lighting vertices of triangles resultant from said tessellating” is performed by a GPU that includes a dedicated processor programmed to execute code to light the vertices of the triangles. Ex. 1001, 6:60–65, 7:10–15, 7:24–26, 12:49–52; Ex. 1003 ¶¶ 110–111. We construe “lighting unit” as a means plus function limitation with the function of lighting triangles resulting from said tessellation unit (claim 10), lighting the tessellated transformed objects (claim 13), or lighting vertices of triangles resultant from said tessellating (claim 15), and with the corresponding structure of a GPU that includes a dedicated processor programmed to execute code to light the tessellated objects. d) Rendering unit Claim 14 recites “a rendering unit operatively coupled to the lighting unit for rendering the lighted, tessellated, transformed objects.” The specification discloses that the function of rendering the lighted, tessellated, transformed objects is performed by a GPU that includes a dedicated processor programmed to execute the rendering steps of the disclosed microcode. Ex. 1001, 6:65–7:3, 7:10–15, 7:24–26, 12:49–52; Ex. 1003 ¶¶ 112–113. We construe “rendering unit” as a means plus function objects, and with the corresponding structure of a GPU that includes a dedicated processor to execute the rendering steps of the disclosed microcode.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“e) Remaining claim terms No other terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We agree with Petitioner. Pages 511–527 of Foley were previously presented to the Office. See Ex. 1001, code (56). In contrast, Petitioner relies on pages 17, 279–281, 508, 521, 721, 736–737, 807, 855, 866–871, 873–879, 888, and 890–892 of Foley. See Pet. 30–77. Out of all of the pages of Foley cited in the Petition, only one, page 521, was previously presented to the Office. On the record before us, there is no indication that any of the remaining pages of Foley cited in the Petition were presented to, or considered by, the Office. Notably, the IDS disclosure cited just 17 pages out of Foley’s over 1200 pages of content, but did not cite the pages that teach the feature that the Examiner found was patentable over the prior art. Compare Ex. 1017, at 177 (In the statement of allowable subject matter, the Examiner concluded that “the prior [art] fails to teach a tessellate unit coupled between the transform unit and the lighting unit.”), with Ex. 1007, at 807 (Foley teaches that “tessellation should occur after transformation into a coordinate system in which screen size can be determined” for the benefits of “enabl[ing] tessellation size to be determined adaptively, and limit[ing] the amount of data that is transformed.”); see also id. at 866–877. Thus, the 2 U.S. Patent No. 7,532,213, which was reissued as the ’534 patent at issue here. See Ex. 1001, code (64). previously presented to the Office. Patent Owner contends that even if Petitioner cites to portions of Foley not considered by the Office, the Examiner considered other references that are cumulative to and substantially the same as the portions of Foley cited by Petitioner. Prelim. Resp. 22. In particular, Patent Owner contends that the ’534 patent recognizes that pipeline graphics architecture was well-known at the time of invention, and that other references that teach pipeline graphics architecture were considered by the Office. Prelim. Resp. 23–24 (citing Ex. 1001, Fig. 2, 2:42–58; Ex. 1032, Fig. 2b, 5:18–22; Ex. 1033, Fig. 1A, 6:28–31, 21:1–3). We disagree with Patent Owner. Foley’s disclosure of a pipeline graphics architecture that teaches the benefits of employing dedicated processors for tessellating after transforming is explicit and, so far as we can tell from the record presented, is not found in any reference previously cited to the Office. See Ex. 1007, 807, 866–877. Thus, the same or substantially the same art was not previously presented to the Office.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham - Dell Technologies Inc. / Dell Inc. v. 3d Surfaces, LLCInstitution deniedPTAB · Apr 19, 2023 · IPR2023-00003 · APJ George R Hoskins · IPR · Institution
The Board denied institution of IPR on claims 1, 2, 9–11, 17, and 18 because the priority-date concern was mooted and exceptional circumstances for two petitions were not shown.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“Patent Owner’s stipulation moots Petitioner’s concern regarding the ’299 patent’s effective filing date. Petitioner has not otherwise shown exceptional circumstances that would warrant institution on two petitions. See Exp. 4 (arguing the two petitions present only a reduced burden on Patent Owner). Thus, we do not institute an inter partes review in this proceeding, IPR2023-00003, for the reasons set forth above. See 35 U.S.C. § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 7,245,299
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.